DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-3 in the reply filed on 7/22/2026 is acknowledged.
Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/22/2026.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yoshimura et al. (WO 2021/125196 A1, hereinafter “Yoshimura”).
US 2023/0031882 A1 is an English language equivalent of WO 2021/125196A1 and Applicant provided a copy of the WO document with the IDS filed 9/20/2024.
Regarding claim 1, Yoshimura teaches a graphite-copper composite material that includes a copper layer and scaly graphite particles laminated with the copper layer interposed therebetween, where the copper volume fraction is 3-20% (Yoshimura, Abstract).
The graphite-copper composite of Yoshimura corresponds to a graphite-copper composite material of claim 1. The copper layer of Yoshimura corresponds to a copper layer of clam 1. The scaly graphite particles laminated with the copper layer of Yoshimura corresponds to scaly graphite particles stacked via the copper layer of claim 1. The copper fraction of Yoshimura falls within wherein the graphite-copper composite material has a copper volume fraction of 3% to 30% of claim 1. Given the thickness of the copper oxide layer at the interface between the copper layer and the scaly graphite particles can be 0 µm, Yoshimura need not teach this feature.
Alternatively, Yoshimura does not explicitly disclose the thickness of the copper oxide layer, however, Yoshimura also teaches that the pressure in the sintering mold is lowered to preferably 50 Pa or less in order to suppress the oxidative deterioration of components in the equipment (Yoshimura, [0057]). Moreover, Yoshimura teaches the copper particles include certain amounts of aluminum or silicon, but does not disclose an amount of oxygen (Yoshimura, [0050]).
Therefore, it would be obvious to one of ordinary skill in the art that Yoshimura intends to exclude oxygen from the copper particles as well as to suppress oxygen within the sintering process, and thereby arrive at a copper oxide layer of 100 µm or less as claimed.
Regarding claim 3, Yoshimura teaches the invention relates to a graphite-copper composite material and a heat sink member using the same (Yoshimura, [0002]), which corresponds to a heat sink member comprising the graphite-copper composite material according to claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura (see reference above).
Regarding claim 2, Yoshimura teaches the thermal conductivity of the composite material is preferably 750 W/(m·K) or more (Yoshimura, [0035]). The range of Yoshimura overlaps with the range of claim 2. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2010/0207055 A1, hereinafter “Ueno”).
Regarding claim 1, Ueno teaches a metal-graphite composite material having a high thermal conductivity, comprising 20-80 vol.% of a scaly graphite powder and 80-20 vol.% of a matrix selected from copper, aluminum, or alloys thereof (Ueno, [0001] and [0010]). Ueno further teaches the method of making includes obtaining a powder mixture by mixing the scaly graphite and matrix powders, forming a sintering precursor by use of the powder mixture, and sintering the precursor with uniaxial pressing being performed (Ueno, [0011-0014]).
Ueno also teaches, when the matrix powder is aluminum, the surface is oxidized which cannot be removed during sintering, therefore it is best to have the smallest surface area as possible, however, copper or an alloy thereof does not include the same factor, i.e., copper is not oxidized and would not produce a copper oxide layer (Ueno, [0045-0046]).
The metal-graphite composite of Ueno corresponds to a graphite-copper composite material of claim 1. The copper and graphite sintered composition of Ueno corresponds to a copper layer and scaly graphite particles stacked via the copper layer of claim 1.
The metal fraction of Ueno overlaps with wherein the graphite-copper composite material has a copper volume fraction of 3% to 30% of claim 1. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Given the thickness of the copper oxide layer at the interface between the copper layer and the scaly graphite particles can be 0 µm, Ueno need not teach this feature. Moreover, the lack of the problematic oxidizing particles of copper as noted above, would lead one of ordinary skill in the art to know that the copper oxide layer of Ueno would be 100 µm or less as claimed.
Regarding claim 2, given the composition and method of the metal-graphite composite material of Ueno are substantially identical to the composition and method of the copper-graphite composition material as used in the present invention, as set forth above, it is clear that the metal-graphite composition of Ueno would inherently have a thermal conductivity in a direction perpendicular to a direction in which the scaly graphite particles are stacked is 850 W/(m·K) or more as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 3, Ueno teaches the metal-graphite composition material is suitable for cooling semiconductor devices and the like that need efficient heat dissipation (Ueno, [0001]), which corresponds to a heat sink member comprising the graphite-copper composite material according to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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